instance, in the United Kingdom since 1983 and in Canada since 1985. GAP stores were opened in the United
Kingdom in 1987, and by 1991 there were some 1000 stores in the USA, Canada and the United Kingdom. By
1992 the GAP trade mark had become one of the largest selling apparel brands in the world measured by unit
sales, and it is now the second largest. At present hundreds of GAP trade marks are registered in countries
alphabetically and otherwise as far apart as Albania and Zimbabwe.
[6] Prior to the 1990s, the respondent showed little interest in the local market. The explanation given was that
because of the political climate in this country, as an American company it was under a number of financial,
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political and legislative constraints that precluded expansion into South Africa. However, if one considers that
in 1991 there were GAP stores in only three countries, and since then the respondent's attempts to enforce
its rights locally have been at less than a pedestrian pace, the explanation rings somewhat hollow.
[7] Turning then to the Gap tale in this country: During 1971, at a time when the respondent had 25 THE GAP
retail outlets in six states in the USA, and had not yet used a GAP trade mark in respect of clothing, one Hirsch
"coined" the trade mark GAP and began using it locally on clothing, and on 21 March 1973 he applied for the
registration of the trade mark GAP in class 25 in relation to articles of clothing, including footwear (TM
73/1378). This registration predates any of the respondent's trade marks in class 25, even in the USA, and
there is nothing on record to suggest that Hirsch had copied or derived his inspiration from the respondent's
use of the GAP name on its stores. During the 1970's, the proprietor, to whom Hirsch in the meantime had
assigned this mark, manufactured and sold substantial numbers of jeans under the mark. A further GAP mark
("the first device mark" TM 80/5548), which consists of the word mark in a stylised form, was registered during
1980.
[8] During 1983 the Group obtained control over the proprietor. Capitalising on the fact that South Africa was
subject to trade sanctions and that article 6bis protection did not then exist, the proprietor changed its 1973
GAP trade mark to THE GAP, the corporate and trading name of the respondent. In 1988, the proprietor
applied for registration of a second THE GAP (TM 88/4994) device mark, a blatant copy of respondent's logo; it
also applied for GAP KIDS (TM 88/8783), an appropriation of respondents' name for its children's stores, first
begun in 1985; and in 1989 it applied for GAP STORES (TM 89/5087) in class 42. These applications were all
granted. Another application, in respect of GAP STAR, was filed in 1993 but is pending because of opposition
by the respondent.
View Parallel Citation
The principle of territoriality
[9] At the outset I wish to deal with the principle of territoriality applicable to trade marks. Nicholas AJA explained
the principle in Victoria's Secret2 in these terms:
"In the Moorgate judgment Mr Trollip3 stated that:
' . . . a trade mark is purely a territorial concept; it is legally operative or effective only within the territory
in which it is used and for which it is to be registered. Hence, the proprietorship, actual use, or proposed use
of a trade mark mentioned in section 20(1) [of the Trade Marks Act 62 of 1963] are all premised by the
subsection to be within the RSA.'
It follows that the fact that a trade mark is registered and has been used, even extensively used, by one person in
a foreign country does not in itself constitute a bar to its adoption and registration by some other person in South
Africa."
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Nicholas AJA continued:
"In the case of a foreign trade mark, there is no legal bar to its adoption in South Africa unless it is attended by
something more. Thus in delivering the unanimous judgment of the Full Court in P Lorillard and Co (supra at 356G
H),4 Boshoff J said:
'The basis of the challenge on this ground is that the objector was to the knowledge of the applicant the
proprietor of such a trade mark in the United States of America and that the applicant improperly
appropriated the mark. In the present state of the law a trade mark is a purely territorial concept and there
is, generally speaking, nothing to prevent a person from asserting a proprietary right in a trade mark in
relation to which no one else has in the same territory asserted a similar right.'"
Nicholas AJA also cited a number of judgments from foreign jurisdictions to show that the principle is not
peculiar to this country but is generally accepted.5
[10] More recently, in the Barcelona.com case,6 a US Federal District Court of Appeals dealt with the same
underlying principle (per Niemeyer, Circuit Judge):
"The relevant substantive provision in this case is Article 6(3) of the Paris Convention, which implements the
doctrine of territoriality by providing that "[a] mark duly registered in a country of the [Paris] Union shall be
regarded as independent of marks registered in the other countries of the Union, including the country of origin." .
. . As one distinguished commentary explains,
"the Paris Convention creates nothing that even remotely resembles a 'world